Friday, August 14, 2009

Precedential No. 34: Applicant's Cancelled Registration for Identical Mark No Help, TTAB Affirms 2(d) Refusal of "DAVEY" for Water Pumps

In a lengthy, comprehensive, and perhaps record-breaking du Pont analysis, the Board affirmed a Section 2(d) refusal to register the mark DAVEY for "electric motors for machines; waterpumps with fluid flow or pressure control for domestic, industrial and commercial use; and parts and fittings therefor." It found the mark likely to cause confusion with the identical mark registered for "air compressors and parts therefor." Usually, everyone is completely exhausted by the time the seventh or eighth du Pont factor is reached, but the Board rumbled on through factors eleven, twelve, and thirteen, and the last one turned out to be perhaps the most interesting. In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009) [precedential].

This post will not regurgitate all the details of the Board's analysis regarding the single digit factors. Suffice it to say that (factor 1) the identity of the marks weighed heavily in favor of the Section 2(d) refusal. The Board found the goods to be related (2) , since Registrant's air compressors and parts therefor "actually encompass[,] applicant's 'electric' motors for machines." Third-party Internet evidence and third-party registrations bolstered that finding.

The Internet evidence also showed that (3) the normal trade channels for the goods are the same or overlapping. There was no evidence to suggest (4) that the goods are so expensive or that purchasers are so careful that the likelihood of confusion would be significantly mitigated.

As to (5), there was no evidence that the cited mark is famous, but such evidence is "not particularly significant in the context of an ex parte proceeding." Also, there was no evidence of third-party use of similar marks on similar goods (6). These two factors were neutral.

Applicant asserted that it was unaware of any incidents of actual confusion (7, 8) during ten years of contemporaneous use. However, such evidence is hard to come by, and the Board has no way of knowing whether Registrant is aware of actual confusion. Nor was there evidence indicating that there has been a significant opportunity for actual confusion to have occurred. Therefore these two factors were neutral.

Jumping to (11), the Board considered the extent to which applicant "has a right to exclude others from use of its mark on its [sic] goods." Applicant's cancelled registration provided no presumption of an exclusive right to use the mark, and its asserted common law rights based on ten years of use do not yield "any significant right to exclude others from use of the mark." This factor was therefore neutral.

Under (12), the Board found that the potential for confusion cannot be deemed to be de minimis, since the goods involved are of the type that would be marketed to and purchased by significant numbers of purchasers. It deemed this factor neutral, at best.

Finally, the Board reached miscellaneous factor 13, which covers "any other established fact probative of the effect of use." The Board here considered Applicant's arguments regarding the assignment and the file histories of the two registrations cited: DAVEY registration discussed heretofore, and a second registration for DAVEY QUIETFLO for "air compressors," which the Board deemed relevant to the factor 13 discussion.

Applicant owned a registration for its applied-for mark for the same identified goods, but that registration was cancelled under Section 8 in 2006. When that registration issued in 2000, both of the cited registrations existed on the Trademark Register. Neither of the two registrations were cited in 2000 to bar Applicant's registration. Thus the three registrations co-existed on the Register from 2000-2006. Applicant now argued that it was merely seeking to return to the status quo that existed prior to the Section 8 cancellation of its registration.

The Board, as usual, pointed out that it is not bound by decisions of the prior Trademark Examining Attorney, but instead must decide the case on the record before it. The now-cancelled registration is not entitled to any of the Section 7(b) statutory presumptions. The Board concluded that these facts "weigh in applicant's favor to a degree, but they are not determinative."

It then considered the tangled ownership histories of the two cited registrations. For most of their existence they were owned by different entities, leading Applicant to argue that the two cited registrations are more similar to each other than is its mark, and that "if the two cited registrations can have co-existence on the Register for most of their existence, then applicant's mark likewise can co-exist and should be registered." Nothing doing, said the Board: the co-existence of two confusingly similar marks on the Register and owned by different owners (which marks arguably should not have been registered over each other) "does not relieve the Board of its duty to determine the registrability of the applicant's mark on the record before it, nor does it justify the addition to the Register of what may be yet another confusingly similar mark." [Moreover, the cited registrations were owned by the same person when the second registration issued, which would explain why one was issued over the other.] Again, these facts weigh in Applicant's favor to a degree, but they are not determinative in the overall analysis.

Weighing the pertinent factors, the Board concluded that a likelihood of confusion exists, and it affirmed the Section 2(d) refusal.

TTABlog comment: Whew! That was exhausting! I left out the procedural part of the decision, in which the Board rejected Applicant's complaint about Examining Attorney Alicia P. Collins's submission of further evidence when she denied Applicant's request for reconsideration. According to the Board, Applicant could have suspended its appeal and ask for remand to the Office if it wanted to challenge that evidence.

Text Copyright John L. Welch 2009.


At 5:05 PM, Anonymous intellectulaw said...

First: What a great blog! Totally addicting! Both the TTAB cases showcased and the opinions that follow are thought provoking and enlightening. Thank you.

Second: this case provides answers to two very important questions: a) How to introduce evidence after filing a Notice of Appeal with the TTAB and before filing the Appeal Brief. One could only wish that a similar procedure was available when filing a Notice of Appeal in any one of the 11 Circuit Courts of Appeal. And b) Whether an Examiner should allow a newly filed application to proceed to registration, just because the application is for a mark and goods that are the same as those covered by a prior registration that was cancelled for failure to file a Section 8 and Section 15 affidavit between the 5th and 6th year.

What is particularly curious, however, is why the Applicant chose the Appeal route as opposed to suspending the proceedings and initiating a concurrent use proceeding, or contacting the prior registrant and seeking a Co-Existence Agreement.

The facts in the case clearly showed that from 2000 through 2006 the registrations on the basis of which the Examiner issued her refusal and the abandoned registration coexisted without incident. If the prior registrants had experienced confusion of some sort they would have moved to oppose the application before its issuance in 2000, or move to cancel the registration some time between 2000 and 2006. But they did neither. Thus, there is a very strong inference that, while in the strictly academic environment of the TTAB analysis a likelihood of confusion might exist, in reality there is none.

Perhaps the Applicant knew something that this case does not disclose. However, in the absence of any facts or explanations to the contrary, the Applicant should have capitalized on the 6 year coexistence of the marks in the market in a manner other than taking an Appeal.

What do you think?

At 1:19 PM, Blogger John L. Welch said...

Flattery will get to everywhere. Well, it will at least get your comment posted.

At 4:49 PM, Blogger John L. Welch said...

Let me try that again: Flattery will get you everywhere. Well, it will at least get your comment posted.

At 5:14 PM, Anonymous Intellectulaw said...


But seriously,it was not meant to be flattery. Although, thanks for posting my comment. It was a sincere reaction to a very relevant blog, which I just discovered, much to my chagrin. It was also meant to be encouragement so that you will continue posting (not that you need it, but what the heck!).

Incidentally, what about my question? I am really curious about what you think.

Looking forward to next week.

At 1:10 PM, Blogger John L. Welch said...

It appears that the two cited registrations had become incontestable, so I don't think there was much the application could do. I don't see any incentive for the registrant(s) to enter into a co-existence agreement.



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